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Intellectual Property, Italy updates

The Supreme Court of Cassation recently reversed a Milan Court of Appeal ruling on patent limitation. The Supreme Court of Cassation found that although the Milan Court of Appeal had held the patent at issue to be valid, it had not granted the patentee's claims for infringement because the patent had been subject to a limitation procedure and the acts of infringement had been carried out before the application for limitation had been filed.

Legislative Decree 15/2019, which implements the EU Trademarks Directive, entered into force on 23 March 2019. The decree's main innovations include the reinforcement of trademark protection (in particular, the possibility of using cross-border measures and reacting against certain preparatory acts of counterfeiting has been extended to transported goods) and the removal of the anachronistic requirement of graphic representation for the registration of non-conventional trademarks.

The so-called 'Growth Decree' has made provision for IP rights, particularly by introducing new regulations dedicated to 'Italian-sounding terms'. Specifically, the new regulations concern the adoption by foreign manufacturers of distinctive signs that evoke Italy and, more generally, trademarks linked to Italian territory. The adoption of such marks is now an act of piracy and considered substantially equal to counterfeiting.

The so-called 'Growth Decree' includes a rule which allows an Italian patent application to be filed based on an international patent application filed under the Patent Cooperation Treaty. The adoption of this provision offers companies a cheaper alternative where the potential exploitation of an invention does not justify the investment required to obtain a European patent. The provision responds to a pressing practical need and is a welcome change.

The government recently adopted provisions to coordinate national legislation with the EU Unitary Patent Regulation and the Unified Patent Court (UPC) Agreement. Italy has chosen a proactive approach to the UPC system, aligning its national law with the system's substantive rules in all respects.

The Court of Milan Companies and IP Specialised Division recently found three companies guilty of infringing a patent owned by Saima Sicurezza. The patent was held to be valid based on claims that the owner had made during the course of the proceedings under an application for limitation under Article 79 of the Industrial Property Code. This decision further aligns the Italian legal system with its EU counterpart and confirms Italian judges' attention to detail and reliability in patent cases.

The Court of Brescia's Company and IP Specialised Division recently issued two landmark decisions that enhance the protection of trade secrets in Italy. The decisions coincide with Italy's implementation of the EU Trade Secrets Directive and confirm the high level of protection afforded to trade secrets, which are considered to be a form of intellectual property and benefit from protection under the EU IP Rights Enforcement Directive.

Lighting management systems represent both technical and legal challenges. Before disclosing a new creation, the relevant parties must assess the IP protection that is available and act accordingly. Companies that produce patentable inventions are advised to consult experts who can evaluate the best strategies to ensure that their innovation exploits its competitive advantage without being open to immediate and legitimate imitation by competitors.

Italian case law on trademarks deemed contrary to public order and accepted principles of morality is fully consistent with EU case law. Two rulings by the Specialised IP Division of the Court of Milan are of particular note in this regard. It is clear that, for both the Italian case law and scholars, the criterion of public perception must be applied in the same way in order to assess the validity of a mark and verify whether other signs interfere with it.

The government recently submitted to Parliament the text of a draft legislative decree to implement the EU Directive on Trade Secrets. The main changes proposed include the alignment of domestic rules on trade secrets with international standards; the prohibition of trade in goods whose design, features, function, production or marketing significantly benefit from unlawfully obtained trade secrets; and the introduction of a regulation to protect the confidentiality of trade secrets in the course of judicial proceedings.

The European Delegation Act 2016 to 2017 contains significant changes concerning IP rights, including the potential destabilisation of a system that has been acknowledged unanimously as satisfactory. Other changes concern the implementation of an EU directive in Italy in order to approximate the trademark laws of EU member states and the amendment of the Industrial Property Code in order to bring it into line with the EU rules on the unitary patent and the Unified Patent Court.

Lawmakers recently intervened in matters concerning collecting societies and copyright through the introduction of Decree-Law 148/2017. This new regulatory amendment further weakens the unjustified monopoly of the Italian copyright collecting agency. However, a number of issues concerning the new wording of Article 180 of the Copyright Law remain, which could result in the retention of inadmissible limitations contrary to EU law and the liberalisation of the market being deferred once again.

With developments in three-dimensional printing allowing for the manufacture of building components, the protection of industrial designs and architecture has become of crucial importance for architects, designers and buyers – both private and public. A number of matters should be considered in this regard, including copyright, the reproduction of industrial designs and architectural works and the moral rights of authors.

Trademarks were recently removed from the list of IP rights that can benefit from the package of fiscal incentives known as the 'Patent Box'. However, a transitional system has been established for companies that have already exercised the Patent Box's three-year incentive option. This decision strengthens the credibility and therefore the attractiveness of these incentives for investors, but the onerous accounting requirements that must be met for a company to avail of these incentives remain in place.

A Court of Catania IP Specialised Division decision ended the infringing activities of a former official dealer at the expense of the prestigious global trademark BVLGARI. The decision is noteworthy as it granted protection against the illegal use of Bulgari's trademarks by the former official dealer of its jewels and expressly acknowledged the legitimacy of the selective dealership system implemented by Bulgari.

The Court of Rome's IP and Company Specialised Division recently issued a short and concise order which confirmed German-based multinational Vorwerk's constitutional right to defence in the form of customs protection against IP infringement activities undertaken in East Asia. The decision is a result of the balanced and efficient IP rights legal framework being developed in Italy, particularly with regard to the need for adequate legal means to protect such rights from the influx of imported copycats.

IP rights and competition rules have been affected by the recent changes to legislation on cinematic works. Law 220/2016 concerning cinematic and audiovisual works establishes special rules for works that benefit from state grants, as these works must be made available to the Italian Film Library and the Ministry of Cultural Heritage for non-profit purposes. The law also introduces protection against unfair competition in the film distribution field.

With its ratification of the agreement establishing the Unified Patent Court, Italy could play an active role in negotiations on the future of the court and the unitary patent in the context of Brexit. The ratification law also modifies the Code of Industrial Property, adding a new rule on contributory infringement that will have a significant impact on rights protection – especially with regard to new technologies, such as three-dimensional printing.

Italian law provides a general rule for the calculation of damages in IP matters, under which a rights holder can receive a sum corresponding to the greater of the infringer's profits or the rights holder's lost profits. The courts have progressively interpreted this rule as being based on full compensation for real damages suffered by the rights holder, as well as on the deterrent effect of further infringing activities.

The Supreme Court recently issued a decision in the ongoing saga between renowned stylist Elio Fiorucci and the company that he founded. The decision examined Fiorucci's rights to register his name as a trademark after leaving the company – which had registered his name as a trademark with his agreement – and the potential deceptiveness of a trademarked name when the relationship between the person and the trademark owner has ended.

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